In 2009, Catherine Alexander heard a rumor. The tattoo artist was told that World Wrestling Entertainment, Inc., was about to introduce a new consumer product — faux sleeves to be worn by those pretending to be their favorite wrestler. She contacted WWE’s legal department. After introducing herself as WWE superstar Randy Orton’s tattoo artist, she said she was willing to negotiate for any reproductions of her work.
“The person laughed at me and said I had no grounds, and they can do what they want with his images,” she testified at a deposition. “He is their wrestler.”
The WWE isn’t laughing anymore. On Saturday, an Illinois federal judge handed her partial summary judgment by determining that WWE and Take-Two Interactive Software, the publisher of the WWE 2K series of video games, had indeed copied her work. Now the question for a jury is whether that rises to copyright infringement. The judge denies the defendants’ own motion for summary judgment by deciding that certain questions are triable ones. Those include whether Alexander impliedly licensed Orton to disseminate and display the six tattoos she inked for him. The tattoos include tribal tattoos on Orton’s forearm, a Bible verse on his arm, a dove, a rose, and a skull.
U.S. District Court Judge Staci Yandle’s decision setting up the first copyright trial ever to focus on the unauthorized reproduction of tattoos will likely surprise those who figured the issue to be largely resolved.
Last March, Take-Two beat a copyright suit brought by a company that claimed to own the tattoo designs featured on the bodies of NBA stars LeBron James, Kenyon Martin and Eric Bledsoe. The New York judge in that case had decided that the small display of tattoos in a video game weren’t substantially similar to what were on the basketball players, and even if otherwise, the use of the copyrighted material was de minimis, there was a reasonable inference of an implied license, and the video game maker also had a good case for fair use. It was a complete win for the defendant, and one that put some minds in the entertainment industry at ease.
Take-Two is unsuccessful in repeating the trick.
Take the issue of whether the use of the tattoo designs was a de minimis part of WWE 2K. Unfortunately for the WWE and Take-Two, this case comes in the one circuit in the nation that hasn’t explicitly recognized a trivial-taking as a viable affirmative defense.
“Whether the Seventh Circuit recognizes this defense to copyright infringement claims is an open question,” writes Yandle, adding that she doubts the defense is viable generally and in this particular situation. “The defense has been successfully invoked to allow copying of a small and usually insignificant portion of the copyrighted works, not the wholesale copying of works in their entirety as occurred here.”
Looking at the other defenses, the judge says a trial is required.
On the issue of whether Orton got a license when he was inked, the wrestler stated in a declaration that he understood the tattoos to be his personal expression and was never told he’d need further permission to make them visible.
“It is unclear whether Alexander and Orton discussed permissible forms of copying and distributing the tattoo works or whether any implied license included sublicensing rights such that Orton could give permission for others to copy Alexander’s tattoo works,” writes Yandle. “Thus, the evidence raises a triable issue of fact as to the existence and scope of an implied license and Defendants’ motion is denied as to this affirmative defense.”
A trial will also have to take up the defendants’ position that the game’s use of tattoos was a copyright fair use.
On the first factor of fair use, for example, the judge’s opinion states, “Alexander contends she created the tattoos for the purpose of displaying them on Orton’s body and that Defendants used the tattoos for the same purpose; to display them on Orton’s body in the video games. Alexander also disputes Defendants’ characterization of the size of the tattoos and maintains they are prominently displayed and clearly visible in the video games. These are material factual disputes.”
Here’s the rest of the ruling: